OPPOSITION No B 3 062 591

Cervecería Modelo de México, S. de R.L. de C.V., Javier Barros Sierra No. 555, Piso 3, Colonia Zedec Ed Plaza Santa Fe, Delegación Álvaro Obregón, CP 01210 Mexico City, Mexico (opponent), represented by Novagraaf Nederland B.V., Hoogoorddreef 5, 1101 BA Amsterdam, Netherlands (professional representative)

a g a i n s t

Corona S.R.L., Via Borgogna 8, CAP 20122 Milano, Italy (applicant), represented by Rodall Srl Agentie de Proprietate Industriala, Str. Polona nr. 115 bl. 15, sc A, apt. 19 sector 1, 010497 Bucarest, Romania (professional representative).

On 28/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 062 591 is upheld for all the contested services.

2. European Union trade mark application No 17 883 715 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the services (Class 43) of European Union trade mark application No 17 883 715 for the figurative mark . The opposition is based on European Union trade mark registration No 13 384 169 for the word mark ‘CORONA’. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

a) The services

The services on which the opposition is based are, amongst others, services for providing food and drink and temporary accommodation in Class 43.

The contested services are services for providing food and drink and temporary accommodation in Class 43.

They are identically contained in both lists of services.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be identical are directed at the public at large. The degree of attention is considered to be average.

c) The signs

CORONA
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common element ‘CORONA’ is meaningful in certain territories, for example in those countries where Spanish is understood. A conceptual similarity between signs with analogous semantic content may give rise to a likelihood of confusion where the earlier mark is particularly distinctive (judgment of 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public such as Spain.

The element ‘CORONA’, present in both signs, will be understood as a ‘crown’ by the relevant public (information extracted at Collins Dictionary https://www.collinsdictionary.com/dictionary/spanish-english/corona on 28/05/2019). As this element is not descriptive, allusive or otherwise weak for the relevant services, it is distinctive.

It should be pointed out that, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). This applies especially in the current case regarding the contested sign, where the figurative elements, such as the black background devices serve to decorative purposes and will barely be attributed any trade mark significance. Also, the figurative element of the contested mark being a depiction of a crown is commonly used to denote luxury or superior quality and, therefore, has a laudatory connotation. In such case, it is considered that the distinctiveness of this element is very limited. A similar reasoning applies to the stars depicted within the mark. The figurative element depicted in the centre of the mark, could be perceived as the letters ‘O’ or ‘C’, however, in the Opposition Division´s opinion, due to its position and structure it will be seen as a figurative element (with no particular meaning) rather than a letter.

Given the overall composition of the contested sign and its proportions, it is considered that it does not contain an element that is clearly more eye-catching than the others.

Visually, the signs coincide in the word ‘CORONA’ even though the letters are slightly stylised in the contested mark. It is the only element of the earlier sign and is the element with greatest impact of the contested sign.

The signs differ, however, in the contested sign’s figurative elements, which nevertheless, will be given less attention by the relevant consumers than the sign’s verbal element as reasoned above. Therefore, the signs are highly similar in the visual aspect.

Aurally, they signs are identical, as the figurative elements of the contested sign will not be pronounced.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. On account of the identical meaning of the verbal element (CORONA) of the contested sign and the entire earlier mark, the signs are considered highly similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The signs are visual and conceptually similar to a high degree, and aurally identical.

As regards the services, they are identical. The level of attention is average and the earlier mark has an average distinctive character.

The Opposition Division considers that the differences between the are clearly not sufficient to outweigh their strong similarities, also taking into account that the all relevant services are identical. Therefore, it is concluded that the relevant public could believe that the services come from the same undertaking or from economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the Spanish-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 384 169. It follows that the contested trade mark must be rejected for all the contested services.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Tu Nhi VAN

Gonzalo BILBAO TEJADA

Beatrix STELTER

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.